`571-272-7822
`
`
`
` Paper 19
`
` Entered: April 2, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESEARCH IN MOTION CORPORATION
`Petitioner,
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner.
`____________
`
`Case IPR2013-00016 (JYC)
`Patent 6,441,828
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On April 1, 2013, the initial conference call for this trial was held
`
`between respective counsel for the parties and Judges Medley, Turner, and
`Chang. The Board instituted the instant inter partes review on March 18,
`2013. (Paper 16.) The purpose of the call was to discuss the motions that
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`the parties intend to file and any proposed change to the Scheduling Order
`(Paper 17).
`During the conference call, the parties did not request any change to
`the Scheduling Order. MobileMedia stated that it may file a motion to
`amend claims under 37 C.F.R. § 42.221.
`RIM requested authorization to submit additional grounds of
`unpatentability or, alternatively, to file a motion to submit supplemental
`information under 37 C.F.R. § 42.123(a) to present the additional grounds of
`unpatentability. See Paper 18.1 RIM indicated that in a concurrent
`litigation2, the District Court of Delaware granted summary judgment of
`invalidity of dependent claims 17 and 18 of the ’828 patent as anticipated by
`U.S. Patent No. 6,563,535 (“Anderson ’535”). RIM proposed to submit the
`same grounds from that decision.
`In response, MobileMedia indicated that RIM could have submitted
`the grounds based on Anderson ’535 with its petition because the grounds,
`with the corresponding claim charts, were presented in the concurrent
`litigation on March 26, 2012. According to MobileMedia, presenting the
`new grounds in this proceeding after institution would place an unnecessary
`burden on the patent owner while it is preparing to file a patent owner
`response. MobileMedia further stated that the summary judgment granted
`
`
`1 On March 29, 2013, RIM filed a notice of petitioner’s request for
`authorization to submit additional grounds for unpatentability.
`
` 2
`
` MobileMedia Ideas, LLC v. Apple Inc., Case No. 10-cv-258-SLR (D. Del.).
`2
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`by the district court is not a final decision, and its appeal rights have not
`been exhausted.
`The Board explained that the original petition should have included all
`of the asserted grounds of unpatentability. See 37 C.F.R. § 42.104(b). The
`Board expressed the concerns that the additional grounds would place an
`unnecessary burden on the patent owner and Board, and would impact the
`ability of the Board to timely complete the review.
`Finally, the Board observed that the new grounds proposed by RIM
`seem to be redundant in light of the instituted grounds of unpatentability.
`RIM appeared to agree with the Board’s observation.
`Upon consideration of the parties’ contentions, the Board denies
`RIM’s request for authorization to submit additional grounds of
`unpatentability.
`Accordingly, it is
`ORDERED that RIM’s request for authorization to submit additional
`grounds of unpatentability after institution is denied; and
`FURTHER ORDERED that RIM is not authorized to file a motion
`to submit supplemental information under 37 C.F.R. § 42.123(a) to present
`additional grounds of unpatentability.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`
`
`PETITIONER:
`
`Robert C. Mattson
`Oblon Spivak
`CPdocketMattson@oblon.com
`
`PATENT OWNER:
`
`Anthony C. Coles
`PROSKAUER ROSE LLP
`acoles@proskauer.com
`
`
`
`4
`
`
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